`
`Europiisches
`”mm“
`Efilfit’fiflnce
`Office européen
`d” “m“
`
`
`
`
`
`Parry, Simon James
`Mewburn Ellis LLP
`33 Gutter Lane
`London
`ECZV 8A8
`ROYAUME UNI
`
`European Patent Office
`80298 MUNICH
`GERMANY
`Tel. +49 (0)89 2399 - 0
`Fax +49 (0)89 2399 - 4465
`
`this communication:
`
`Tel.:+31 (0)70 340 45 00
`
`Date
`
`10.06.1 1
`
`Reference
`SJP/FP6724736
`
`Koss Corporation
`
`097311468 - 2225 / 2272259 PCT/US2009039754 Applicant/Proprietor
`
`Application NoJPatent No.
`
`The extended European search report is enclosed.
`
`Communication
`
`The extended European search report includes, pursuant to Rule 62 EPC, the supplementary European
`search report (Art. 153(7) EPC) and the European search opinion.
`
`Copies of documents cited in the European search report are attached.
`
`B 0 additional set(s) of copies of such documents is (are) enclosed as well.
`
`Retund of the search fee
`
`If applicable under Article 9 Rules relating to fees, a separate communication from the Receiving Section
`on the refund of the search fee will be sent later.
`
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`
`EPO Form 15073
`
`08.10
`
`Bose Exhibit 1011
`
`Bose V. Koss
`
`Exhibit 1011 - p. 1
`Exhibit 1011 — p. 1
`
`

`

`Datum
`Date
`Date
`
`cf Form 1507
`
`Blatt
`Sheet
`Feuille
`
`1
`
`Anmelde-Nr:
`Application N0:
`Demande n°:
`
`09 731 146 .8
`
`The examination is being carried out on the following application documents
`
`Description, Pages
`
`1—21
`
`as published
`
`Claims, Numbers
`
`1-23
`
`
`filed with entry into the regional phase before the EPO
`
`Drawings, Sheets
`
`1/16-16/16
`
`as published
`
`1 Reference is made to the following documents; the numbering will be adhered to
`
`in the rest of the procedure.
`
`US 2007/165875 A1 (REZVANI BEHROOZ [US] ET AL) 19 July 2007 (2007-07-19)
`
`WO 2007/139578 A1 (SONY ERICSSON MOBILE COMM AB [SE]; BLOEBAUM L
`
`SCOTT [US]; LlU CHARLES) 6 December 2007 (2007-12-06)
`
`us 2007/049198 A1 (WALSH SCOTT [GB] ET AL) 1 March 2007 (2007-03-01)
`
`Unallowable amendments, Article 123(2) EPC:
`
`2 Claims 1-23 filed with the entry into the regional phase before the EPO introduces
`
`subject-matter which extends beyond the content of the application as originally filed,
`
`contrary to Article 123(2) EPC.
`
`2.1
`
`In claim 1, the data transmitted to the data source regarding the one or more
`
`detected infrastructure wireless network comprises identification data and signal
`
`strength. The corresponding originally filled description, see Pag. 12 Line 24 - Pag.
`
`13 Line 6, appears indeed to teach that is transmitted identification data (ID) of the
`
`infrastructure wireless network, Pag. 12 Line 34. However no information regarding
`
`the signal strength is transmitted but only locally evaluated at the earphone side or at
`the data source side.
`
`2.2 The dependencies of the claims filed with the entry into the regional phase
`
`before the EPO were dramatically changed with respect to the originally filed claims
`
`and the examiner did not find that the newly combination so achieved was disclosed
`
`into the originally filed application. Therefore the Applicant is requested to revert to the
`
`original dependencies, or if considers to maintain some of them in believing that the
`
`EPO Form 1703 01.91TR1
`
`Exhibit 1011 - p. 2
`Exhibit 1011 — p. 2
`
`

`

`Datum
`Date
`Date
`
`cf Form 1507
`
`Blatt
`Sheet
`Feuille
`
`2
`
`Anmelde-Nr:
`Application N0:
`Demande n°:
`
`09 731 146 .8
`
`newly achieved combination can be unambiguously derived from the originally filed
`
`application documents, if any, than is invited to file explanation in supporting any of
`
`the modified dependencies.
`
`Some of the modified dependencies:
`
`- claims 4, 5, 6, 11 were originally dependent only n claim 1,
`
`- claims 7, 8 were originally dependent only on claim 6,
`
`- claims 13, 14, 15 were originally dependent only on claim 12,
`
`- claim 16 was originally dependent only on claim 13,
`
`- claims 18, 19 were originally dependent only on claim 11.
`
`2.3 As with respect to claims 14 and 15, beyond the fact that their dependencies
`
`were dramatically changed, now any of them is a "doubled" claim referring either to a
`
`system or to an earphone, thus giving rise to a clarity objection, Article 84 EPC.
`
`ngk 9f glariflaArIiglg §4 EPQ:
`
`3 The application does not meet the requirements of Article 84 EPC, because claims
`1-23 are not clear.
`
`3.1 The earphone of claim 1 appears to receive digital audio data from the data
`source via an ad hod wireless network without to establish in advance such a network,
`
`e.g. to "establish an ad hoc wireless network”. For clarity such an extra feature should
`be added in claim 1.
`
`Similarly, data regarding the infrastructure wireless network is transmitted to the data
`
`source without explicitly defining that such an existing infrastructure network is
`
`detected in advance, e.g. "detect existing infrastructure wireless networks".
`
`3.2 The "pre-set infrastructure wireless network” of claim 5 was not defied in any of
`
`the preceding claims prior to be used.
`
`This said "pre-set infrastructure wireless network" appears rather to refer to the said
`"infrastructure wireless network" of claim 1.
`
`3.3
`
`Independent method claim 20 should clearly correspond to the independent
`
`apparatus claim 1. Following the requirement of Article 84 EPC, taken in combination
`
`with Rule 43(1) and (3) EPC, any independent claim must contain all the technical
`features essential to the definition of the invention.
`
`In the present case, since independent method claim 20 is not fully corresponding to
`
`the independent apparatus claim 1, is not clear which are those features which are
`considered to be essential for the definition of the invention, Article 84 EPC.
`
`EPO Form 1703 01.91TRl
`
`Exhibit 1011 - p. 3
`Exhibit 1011 - p. 3
`
`

`

`Datum
`Date
`Date
`
`cf Form 1507
`
`Blatt
`Sheet
`Feuille
`
`3
`
`Anmelde-Nr:
`Application N0:
`Demande n°:
`
`09 731 146 .8
`
`Lack of Novelty of the Independent Claims, Article 54 (1) and (2) EPC:
`
`4 Document D1 discloses (Fig. 1,2,8,10; Par. 19, 33, 41) a headset which may be
`
`connected to a mobile phone or directly to the wi-fi access point or equivalent. The
`
`mobile phone (Fig. 8 Ref. 840) is the equivalent of a data source in the sense of claim
`
`1. The data source may transmit audio data to the headset (see e.g. Par 33). Such
`
`audio data may be locally stored into the mobile phone, as widely known, or
`
`retransmitted from some any other entity.
`
`Essentially, the headset of document D1 is designed to perform a handoff between
`
`the mobile phone connection and a wi-fi connection or the equivalent. Such a handoff
`
`is advantageously performed when the connectivity to one of the peers is becoming
`
`weak (e.g. the ad hoc connection with the mobile phone) but not only, the person
`skilled in the art is well aware of the need or the benefits of the handoffs. When such a
`
`handoff is performed, information (e.g. including the ID) regarding a possible used
`
`network is exchanged with the communication peer for performing the handoff.
`
`Therefore, the subject-matter of independent apparatus claim 1 and of the
`
`corresponding independent method claim 20 is essentially covered by the system of
`
`D1 and therefore is considered not new, Article 54 (1) and (2) EPC.
`
`Dependent Claims:
`
`5 Dependent claims 2,3,6-19, 21-23 do not contain any features which, in
`
`combination with the features of any claim to which they refer, meet the requirements
`
`of the EPC in respect of novelty (claims 2, 3, 6-8, 10-15, 17, 18) or inventive step
`
`(claims 9, 16, 19, 21 -23). The additional features of the dependent claims are either
`
`disclosed in the cited documents D1 -D3 or represent straightfonNard design options
`
`when designing corresponding wireless devices.
`
`W 6
`
`The system of D1 comprises the feature of performing a handoff between an ad
`
`hoc wireless connection with a mobile phone and an infrastructure wireless network.
`
`Data may be transferred to the earphone either from the mobile phone or from the
`
`infrastructure wireless network, e.g. when a handoff is performed during a data
`
`transfer via the mobile phone from another data source placed somewhere in the
`WEB. However, D1 does not teach that the audio data from the data source, i.e. the
`
`mobile phone, is redirected to the headphone via the infrastructure wireless network
`when the ad hoc network connection is lost, i.e. when the connection with the mobile
`
`phone is lost.
`
`EPO Form 1703 01.91TRl
`
`Exhibit 1011 - p. 4
`Exhibit 1011 — p. 4
`
`

`

`Datum
`Date
`Date
`
`cf Form 1507
`
`Blatt
`Sheet
`Feuille
`
`4
`
`Anmelde-Nr:
`Application N0:
`Demande n°:
`
`09 731 146 .8
`
`Therefore the subject-matter of claim 4 appears to be new when the above objections
`are remedied.
`
`Also the subject-matter of claim 5 appears might be new, provided that the earphone
`
`is connected automatically (see also Pag. 12 Lines 18-21) to a host server via a
`second infrastructure wireless network when the data source is not in wireless
`
`communication range with the earphone via the ad hoc wireless network and the data
`
`source and the earphone are not in wireless communication via said the pre-set
`infrastructure wireless network.
`
`Is to be mentioned that the apparatus of D1 is designed such that, under the (inter)
`
`action of a user, the earphone may be connected to a host server via another
`available infrastructure wireless network when the other two connections are broken.
`
`However, the fact that the earphone automatically connect to such a host server in
`
`such a case, appears not to be disclosed or suggested in the prior art.
`
`Further ggpggfi:
`
`7.1 When filing amendments, the applicant should clearly identify the amendments
`
`made, irrespective of whether they concern amendments by addition, replacement or
`
`deletion, and indicate the passages of the application as filed on which these
`
`amendments are based (see Guidelines E-II, 1). Care should be taken, not to add
`
`subject-matter which extends beyond the content of the application as originally filed
`
`(Article 123 (2) EPC).
`
`The applicant should at the same time bring the description into conformity with the
`amended claims.
`
`7.2
`
`Independent claims are not in the two-part form in accordance with Rule 43(1)
`
`EPC, which in the present case would be appropriate, with those features known in
`
`combination from the prior art being placed in the preamble (Rule 43(1)(a) EPC) and
`
`the remaining features being included in the characterising part (Rule 43(1)(b) EPC).
`
`7.3 To meet the requirements of Rule 42(1)(b) EPC, D1-D4 should be identified in
`
`the description and the relevant background art disclosed therein should be briefly
`discussed.
`
`EPO Form 1703 01.91TRl
`
`Exhibit 1011 - p. 5
`Exhibit 1011 - p. 5
`
`

`

`Europiisches
`Patentamt
`European
`
`
`
`Office européen
`Patent office
`MW
`
`SUPPLEMENTARY
`EUROPEAN SEARCH REPORT
`
`Application Number
`
`EP 09 73 1146
`
`DOCUMENTS CONSIDERED TO BE RELEVANT
`
`Category
`
`Citation of document with indication, where appropriate,
`of relevant passages
`
`Relevant
`to claim
`
`CLASSIFICATION OF THE
`APPLICATION (IPC)
`
`(REZVANI BEHROOZ [US] ET 1-3,6-2
`us 2007/165875 A1
`AL) 19 July 2007 (2007-07-19)
`* figures 1,2,8,10 *
`* paragraphs [0019],
`
`[0041]
`
`*
`
`[0033],
`
`INV.
`H04R1/02
`
`TECHNICAL FIELDS
`SEARCHED
`(IPC)
`
`H04M
`
`x
`
`A
`
`A
`
`|_|
`
`
`
`03.82(PO4CO4)
`
` EPOFORM1503
`
`(SONY ERICSSON MOBILE
`W0 2007/139578 A1
`COMM AB [SE]; BLOEBAUM L SCOTT [US]; LIU
`CHARLES) 6 December 2007 (2007-12-06)
`* figure 3 *
`* page 7,
`line 28 - page 9,
`
`line 3 *
`
`(WALSH SCOTT [GB] ET AL) 1-23
`US 2007/049198 A1
`1 March 2007 (2007-03-01)
`* figure 1 *
`* paragraph [0016]
`
`- paragraph [0018]
`
`*
`
`The supplementary search report has been based on the last
`set of claims valid and available at the start of the search.
`Place of search
`Date of completlon of the search
`
`Examiner
`
`Munich
`CATEGORY OF CITED DOCUMENTS
`X : particularly relevant if taken alone
`Y: particularly relevant if combined with another
`document of the same category
`A : technological background
`0 : non-written disclosure
`P : intermediate document
`
`Moscu, Viorel
`31 May 2011
`T : theory or principle underlying the invention
`E : earlier patent document, but published on, or
`after the filing date
`D : document cited in the application
`L : document cited for other reasons
`& : member of the same patent family, corresponding
`document
`
`Exhibit 1011 - p. 6
`Exhibit 1011 - p. 6
`
`

`

`ANNEXTOTHEEUROPEANSEARCHREPORT
`ON EUROPEAN PATENT APPLICATION NO.
`
`EP 09 73 1146
`
`This annex lists the patent family members relating to the patent documents cited in the above-mentioned European search report.
`The members are as contained in the European Patent Office EDP file on
`The European Patent Office is in no way liable for these particulars which are merely given for the purpose of information.
`31-05-2011
`
`Patent document
`citedIn search report
`
`Publication
`date
`
`Patent family
`member(s)
`
`Publication
`date
`
`US 2007165875
`
`A1
`
`19- 07- 2007
`
`WO 2007139578
`
`A1
`
`06-12-2007
`
`06-12-2007
`
`101449561 A
`2030417 A1
`2009538087 T
`2007283033 A1
`
`03-06-2009
`04-03-2009
`29-10-2009
`
`EPOFORMP0459
`
`For more details about this annex : see Official Journal ofthe European Patent Office, No. 12/82
`
`Exhibit 1011 - p. 7
`Exhibit 1011 - p. 7
`
`